Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 2-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Each of the claim(s) has/have been analyzed to determine whether it is directed to any judicial exceptions.
Step 2A, Prong 1
The claim(s) recite(s):
Claim 2 includes limitations directed towards "2. (Previously Presented) A method of playing a flying disc game, the method comprising:"
These limitations are directed towards managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)
Claim 2 includes limitations directed towards "each of two teams, containing one or more players, being located behind or adjacent to its goal, and taking turns to throw a flying disc toward its opponent's goal, whereby points are scored by a throwing team for the following: a) throwing a disc completely through an opponent's goal, between the pair of posts and beneath the second crossbar, and the disc is not caught; b) throwing a disc completely through an opponent's goal while contacting the elongate target, and the disc is not caught; and c) throwing a disc completely through an opponent's goal between the first and second crossbars, and the disc is not caught; except that no point is awarded to the throwing team when a disc is caught by an opponent."
These limitations are directed towards managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)
Claim 3 includes limitations directed towards "3. (Previously Presented) The method according to claim 2, wherein each game is played to a predetermined point value, and scoring throw a) is worth 1 point, scoring throw b) is worth 3 points, and scoring throw c) is worth 7 points. "
These limitations are directed towards managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)
Claim 4 includes limitations directed towards "4. (Previously Presented) The method according to claim 2, whereby additional points are scored by a throwing team for: d) an opponent who introduces a body part over or through their own goal when catching a thrown disc. "
These limitations are directed towards managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)
Claim 5 includes limitations directed towards "5. (Previously Presented) The method according to claim 4, wherein each game is played to a predetermined point value; and scoring throw a) is worth 1 point, scoring throw b) is worth 3 points, scoring throw c) is worth 7 points, and scoring throw d) is worth 2 points. "
These limitations are directed towards managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)
Claim 6 includes limitations directed towards "6. (Previously Presented) The method according to claim 2, wherein catches by an opponent, to prevent a scoring throw, must be one-handed. "
These limitations are directed towards managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)
Claim 7 includes limitations directed towards "7. (Previously Presented) The method according to claim 6, wherein catches by an opponent, to prevent a scoring throw, may first be tipped one-handed before being caught one-handed by the opponent's teammate. "
These limitations are directed towards managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)
Claim 8 includes limitations directed towards "8. (Previously Presented) The method according to claim 2, wherein when throwing a disc, a player must be located behind or adjacent to that player's goal. "
These limitations are directed towards managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)
Claim 9 includes limitations directed towards "9. (Previously Presented) The method according to claim 2, wherein when throwing a disc, a player must be located behind or adjacent to that player's goal except when an opponent's immediately preceding throw lands and comes to rest before reaching the said player's goal, in which case said player is allowed to instead throw the disc from the spot where the opponent's immediately preceding throw comes to rest. "
These limitations are directed towards managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)
Claim 10 includes limitations directed towards "10. (New) A method of playing a flying disc game, the method comprising:"
These limitations are directed towards managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)
Claim 10 includes limitations directed towards "each of two teams, containing one or more players, being located behind or adjacent to its goal, and taking turns to throw a flying disc toward its opponent's goal, whereby points are scored by a throwing team for the following: a) throwing a disc completely through an opponent's goal, between the pair of posts and beneath the second crossbar, and the disc is not caught; b) throwing a disc completely through an opponent's goal te while contacting the elongate target, and the disc is not caught; and c) throwing a disc completely through an opponent's goal between the first and second crossbars, and the disc is not caught; except that no point is awarded to the throwing team when a disc is caught by an opponent."
These limitations are directed towards managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)
Accordingly, each of the claim(s) recited above recite an abstract idea.
Further, the dependent claim(s), if present, merely include limitations that either further define the abstract idea (and thus don’t make the abstract idea any less abstract) or amount to no more than generally linking the use of the abstract idea to a particular technological environment or field of use because they’re merely incidental or token additions to the claims that do not alter or affect how the process steps are performed.
Step 2A, Prong 2
Prong Two Considerations
This/these judicial exception(s) is/are not integrated into a practical application because the examiner does not find one of the following to exist:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e) and Vanda Memo
Furthermore, limitations that are not indicative of integration into a practical application include:
Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f)
Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g)
Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)
The above-identified abstract idea in each of the claims indicated above (and their respective dependent Claims) is/are not integrated into a practical application under 2019 PEG because the additional elements, either alone or in combination, generally link the use of the above-identified abstract idea to a particular technological environment or field of use. The claims indicated above (and their respective dependent claims) do not improve the functioning of a computer, or any other technology or technical field. Nor do the additional elements serve to apply the above-identified abstract idea with, or by use of, a particular machine, effect a transformation or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. For at least these reasons, the abstract idea identified above in the above identified claim(s) (and their respective dependent claims) is/are not integrated into a practical application under 2019 PEG.
Additionally, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. That is, like Affinity Labs of Tex. v. DirecTV, LLC, the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution. Moreover, these claims are merely directed to an abstract idea wherein if computer elements are claimed they are additional generic computer elements which do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. Thus, for these additional reasons, the abstract idea(s) identified above (and their respective dependent claims) is/are not integrated into a practical application under the 2019 PEG.
Accordingly, each of the claims identified above (and their respective dependent claims) are each directed to an abstract idea under 2019 PEG.
Step 2B
None of the claim(s) indicated above (or their dependents) include additional elements that are sufficient to amount to significantly more than the abstract idea for at least the following reasons.
The courts have recognized such computer functions as well understood, routine, and conventional functions when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. See, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
A claim that purports to improve computer capabilities or to improve an existing technology may provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); and Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). However, a technical explanation as to how to implement the invention should be present in the specification for any assertion that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. Here, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. Instead, as in Affinity Labs of Tex. v. DirecTV, LLC 838 F.3d 1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016), the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution.
Taking the additional elements individually and in combination, the additional elements do not provide significantly more. Specifically, when viewed individually, the additional elements in the claim(s) identified above (and their dependent claims) do not add significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment. That is, neither the general computer elements (if any are present) nor any other additional element adds meaningful limitations to the abstract idea because these additional elements represent insignificant extra-solution activity. When viewed as a combination, these above-identified additional elements simply instruct the practitioner to implement the claimed functions with well-understood, routine and conventional activity specified at a high level of generality in a particular technological environment. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. As such, the above-identified additional elements, when viewed as whole, do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the Prong Two Considerations (as indicated above) are not met and the examiner does not find a specific limitation other than what is well-understood, routine, conventional activity in the field (see MPEP 2106.05(d)) to exist in the claim(s) to render the claim(s) significantly more than the abstract idea. Therefore, none of the claim(s) amount to significantly more than the abstract idea itself. Accordingly, the claim(s) indicated above (and their dependent claims) are not patent eligible and rejected under 35 U.S.C. 101 as being directed to abstract ideas in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. V. CLS Bank International, et al. and 2019 PEG.
Response to Arguments
Applicant's arguments filed 10/14/2025 have been fully considered.
The rejections under 35 USC 103 are withdrawn.
With regards to the rejection(s) under 35 USC 101:
On Page 2 of the applicants’ arguments the applicant argues that the claims rejected are not directed towards managing personal behavior or relationships of interactions between people, but that the claimed method is directed to interactions between a player of the game with both a flying disc and two products (i.e., goals) that are placed onto the ground a fixed distance apart and have a very specific structure and that the interaction is between each player the disc and the goal and not direct interaction between people. MPEP 2106.04(a)(2) II clearly states that Certain Methods of Organizing Human Activity describes managing personal behavior that includes social activities and following rules or instructions. The applicant appears to admit that the claimed method is directed towards interactions between players and objects of a game such as a disc and goals. Following rules is not limited to rules dictating interactions between multiple people but is also inclusive of interactions between a person and gaming structures such as a disc or a goal. As such, this corroborates the examiners finding that the abstract idea is present in the claimed limitations. The managing personal behavior may include player(s) following rules of a game that include rules for throwing a disc at a target.
The applicant argues that the instant invention includes limitations directed towards specific steps for carrying out the method by a user and scoring points under one of several recited conditions:
throwing a disc completely through an opponent’s goal, between the pair of posts and beneath the second crossbar, and the disc is not caught;
throwing a disc completely through an opponent’s goal while contacting the elongate target, and the disc is not caught; and
throwing a disc completely through an opponent’s goal between the first and second crossbars, and the disc is not caught.
And that the office action fails to provide any analysis whatsoever as to whether the additional limitations -as noted above- provide a practical application of the judicial exception. However, noted above in MPEP 2106.04(a)(2) II Certain Methods of Organizing Human Activity the rule describes managing personal behavior that includes social activities and following rules or instructions as inclusive of the abstract idea. These limitations are directed towards the abstract idea and do not provide significantly more than that abstract idea. The specifics as to what the rules of game play are is not significantly more than the inclusion of rules in the claims. The specifics of the products are not a particular machine in a sense that would render the abstract idea into a practical application, but general structural limitations that include posts, crossbars and a target. For example, one can reference MPEP 2106.05(b) I in which the Mackay Radio case clearly shows the specifics of an antenna that included the shape, length and angle they were arranged (which were required for the inventive concept) which provided the particular machine to render the abstract idea into a practical application. The specifics of the Mackay Radio case are not seen to be present in the limitations of the instant invention.
As such the examiner is not persuaded by the applicants’ arguments against the rejection(s) under 35 USC 101.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S VANDERVEEN whose telephone number is (571)270-0503. The examiner can normally be reached Monday - Friday 11am - 7pm CST.
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/JEFFREY S VANDERVEEN/Examiner, Art Unit 3711